Category Archives: India Patent Filing

FACEBOOK has filed a patent application in India, which attempts to protect a technology that enables making and receiving payments using a messaging applications. The patent application envisages peer-to-peer payment between users of a messaging application, such as WHATSAPP. Selected figures from the patent application indicates the intended use of the technology.

This Indian patent application is based on a US patent application, which was filed in December, 2014, after FACEBOOK acquired WHATSAPP. Interestingly, in April of this year, WHATSAPP announced that it would be introducing digital payments in India.

One could argue that WHATSAPP is positioned to corner a significant share in the digital payment market in India. For starters, WHATSAPP has a huge consumer base in India and is popular even among those who are not so digitally savvy. Adding to that is the convenience factor in making payments using a chat application. To top it all, the patent application, which might eventually be granted a patent, considering that there are several patents related to payments granted in India. As an example, EBAY was granted a patent (patent number 242805) covering certain technology that facilitates micropayments between parties. A patent grant to FACEBOOK will enable WHATSAPP to monopolize key aspects of the technology that enables peer-to-peer payments using messaging application.

The patent application and WHATSAPP’s digital payment initiative may be the first big bet by FACEBOOK to directly generate revenues from WHATSAPP since its acquisition.

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Listing correct inventors in a patent application is important. An incorrect listing may not only lead to emotional issues, but also loss of rights, among other issues. Incorrect listing may have occurred by omitting names of individuals, who should have been named as inventors in the patent application. On the other hand, incorrect listing may have occurred by including names of individuals, who should not have been named as inventors in the patent application. In any case, such lapse can be set right.

Procedure for adding an inventor to a patent application

Section 28 of The Patents Act, 1970 deals with addition of inventor(s) to a patent application, and the corresponding rules are 66, 67, 68 and 69 of The Patent Rules, 2003. A request to add an inventor to the patent application can be made by any of the below listed entities, based on the circumstances.

Applicant for the patent

Applicant for the patent and the person who has to be added as the inventor

The person who wishes be added as the inventor

1. Request by applicant for the patent

The applicant for the patent can make a request to the Controller to add a person as one of the inventors, if the person who has to be added as the inventor is also the applicant or is at least one of the applicants.

As best practice, it would be wise to submit to the Controller, consent of all the applicants, in case of joint applicants.

2. Request by applicant for the patent and the person who has to be added as the inventor

The applicant and the person who has to be added as one of the inventors can make a request to the Controller, if the person who has to be added as the inventor is neither the applicant nor one of the joint applicants.

3. Request by the person who wishes to be added as the inventor

The person who wishes to be added as the inventor can make a request by himself. Such a scenario might occur when the person in not an applicant for patent on record, and the applicant on record is not willing to make the request to the Controller. On receiving a request of this nature, the Controller will give notice of the claim and the statement made by the person to every applicant for the patent and to any other person whom the Controller may consider to be interested. The Controller may, if required, provide opportunity to be heard to any person to whom he had sent the notice, before deciding.

Procedure for deleting an inventor from a patent or patent application

Section 28(7) of The Patents Act, 1970 deals with deletion of inventor(s) from a patent application, and the corresponding rule is 68 of The Patent Rules, 2003. Under Section 28(7), only those who were added as inventors as a consequence of the request(s) discussed earlier, can be removed. Such a request may be made by any person, and at any time. On receiving a request to certify that such a person should not have been named as the inventor, the Controller may, if required, provide opportunity to be heard to any person whom he thinks might be interested, before taking a decision.

The above discussed requests to add or remove an inventor should be made in Form 8 with the prescribed fee.

It shall be noted that, the Act does not have exclusive provisions for removing inventors who were named while filing the patent application. However, a petition can be filed by relying on sections relevant to inventorship to request the Controller to remove an inventor who was named at the time of filing the patent application.

Apart from addition or deletion of inventors, correction of names of inventors who are already on record is also possible. Such corrections may be required because of clerical errors while filing the patent application, or by reason of change in a person’s name. Request to make such corrections should be made using Form 13 with the prescribed fee.

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Organizations often face situations wherein the names of applicants may need to be added or removed from an Indian patent application. The Indian Patent Act envisages addition or removal of applicants to occur broadly in three scenarios. The scenarios are dealt under Section 20 (1), (4) and (5), and the corresponding Rules are 34(1), 35(1), 36(1).

Section 20(1) and Rule 34 deal with a scenario wherein one or more applicants need to be added or removed by virtue of an assignment, an agreement or operation of law. The assignment or agreement has to be made in writing by the existing applicant of the patent. Further, in case there are two or more joint applicants currently on file, then consent of each of the joint applicants is required. In case a new applicant is being added, the assignment, agreement or operation of law should be to the effect that, if a patent were to be granted eventually, then the new applicant would be entitled to the rights of the existing applicant. Alternatively, the assignment, agreement or operation of law should be to the effect that, if a patent were to be granted eventually, then the new applicant would be entitled to an undivided share in the patent. The request for addition or removal of applicant should be accompanied with original assignment, agreement, an official copy or notarized copy for inspection by the Controller. The Controller may, at his discretion request further proof of title or written consent.

Moving on, Section 20(4) and Rule 35 deal with a situation wherein an applicant, among joint applicants, dies before the patent is granted. The surviving applicant(s) may request the application to proceed in their name alone. However, the application can proceed in the name of the surviving applicant(s) only if there is consent, to that effect, given by the legal representative of the deceased. The request must be accompanied by proof of death of the joint applicant and consent by the legal representative of the deceased. Additionally, documentary evidence to prove that the person giving the consent is the legal representative of the deceased applicant has to be provided. The documentary evidence can be in the form of a certified copy of the will of the deceased applicant or letters of administration in respect of the estate of the deceased applicant.

Section 20(5) and Rule 36 deal with dispute arising between joint applicants of a patent. The dispute may be related to whether the application should be proceeded with or the manner in which the application should be proceeded with. In case of such disputes, any of the applicants can make a request to the Controller seeking direction. The request to the Controller must be accompanied by a statement which fully discloses the facts which the applicant making the request relies on. The request must also set out the outcome or direction sought by the applicant. The Controller will send a copy of the application and the statement to every other joint applicant giving them an opportunity to respond. The Controller will also give all the concerned parties an opportunity to be heard, and then give direction as he thinks fit. The Controller may give directions to enable the application to proceed in the name of one or more of the parties, or to regulate further proceedings as needed.

An application to the Controller to add or remove applicants under the provision of any of the above discussed sections should be made in FORM 6 with the prescribed fee. The form is used for providing details such as, names of applicant(s) to be added or removed, names of original applicants and reason for change, among other details that are to be entered.

Form 6 may also be used to add or remove an applicant from an Indian national phase application where change in applicant has occurred after the international filing date, and the change is not reflected in a notification from the International Bureau (Form PCT/IB/306).

It shall be noted that adding or removing an applicant is not the same as changing or correcting the name of an applicant. In case of clerical errors or legal name change of a person or an organization, the change can be made using Form 13.

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India is one of the fastest-growing major economy in the world. Further, India is fast emerging as a major market for research and technology driven products. Hence, over the years, the number of patent applications filed in India has soared. In the year 2015, India stood at 9th and 6th positions in the ranking of the number of patent applications filed in India by residents and non-residents, respectively. Similarly, the number of trademark applications filed in India has soared over the years. In the year 2015, India stood at 2nd and 9th positions in the ranking of the number of patent applications filed in India by residents and non-residents, respectively.

To handle and prosecute the increase in number of patent and trademark applications, the commerce and industry ministry has been augmenting manpower and is providing training to them. At the CII India-UK Tech Summit held in New Delhi, between November 7-9, 2016 the Joint Secretary in the Department of Industrial Policy and Promotion, Rajiv Aggarwal said that a year ago, the first examination of trademark applications was taking almost a year and half. In the month of November, 2016 the time for first examination of trademark applications has come down to around 4-5 months. By March 2017, it is expected that the first examination of trademark applications will come down to only one month. Similarly, for the first examination of patent applications it used to take approximately 6-7 years. It is aimed to bring down the first examination of patent applications to just 18 months by March 2018.

Conclusion:

It can be clearly seen that Indian patent office is striving to meet the expectations of stake holders when it comes to faster prosecution of the applications related to patent and trademark. Faster prosecution of the applications will lead to further increase the filing of patent and trademark applications, which is beneficial to the stakeholders and the patent office.

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Pfizer was denied a patent by Indian Patent Office for its wonder drug, XTANDI (Enzalutamide), effective for treating prostate cancer with a worldwide sale of 3 billion USD. Though this comes as good news to the consumers as the prices of the drug are expected to drastically reduce, there should not be a deliberate attempt to reject patent applications based on such intentions, which will only stifle innovation. The current market price of the drug is Rs. 3.35 lakhs for one pack containing 112 capsules accounting for a month’s dosage. The drug was developed at the University of California and was acquired by Pfizer when it bought the biotech firm Medivation. The drug is currently sold in India by Astellas Pharma.

The patent rejection was a result of pre-grant opposition proceedings filed by different entities such as BDR Pharmaceutical International, pharma company Fresenius Kabi Oncology and Indian Pharmaceutical Alliance (IPA) in addition to two more persons (Mr. Umesh Shah and Ms. Sheela Pawar). All these oppositions were filed at varying dates ranging from December 2012 to January 2016. The grounds of objection filed by the opponents varied, for example, BDR (Opponent 2) and IPA (Opponent 4) based their objections on grounds of lack of novelty [Section 25(1)(b)] in addition to other grounds whereas Fresenius Kabi Oncology (Opponent 1) opposed mainly on basis of Section 25(1)(e) which is the lack of inventive step.

The inventive step of the patent application was questioned by the Assistant Controller over US5411981 in light of US6518257 in combination with D1 (cited by Opponent 1 as J Med Chem. 2004 Jul15;47(15), 3765-16; A ligand-based approach to identify quantitative structure-activity relationships for the androgen receptors). The claim 3 of the application was found to lack inventiveness in light of US4097578. The final order, dated 8th November 2016, by Mr. Umesh Pandey, assistant controller Patents & Designs, read as, “in view of above instant application is hereby refused as the claimed invention is lacking inventive step under section 2(1)(ja) and also not patentable under section 3(d) and 3(e)”

Meanwhile, the attempts to reduce the prices of the drug XTANDI was also visible in US when various civil society organisations submitted a petition in January 2016 to the US National Institutes of Health (NIH) requesting for authorization of generic production of the drug, which was later rejected by NIH.

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In the month of May 2016, several amendments were made to the Indian Patent Rules, which enabled start-ups to avail expedited examination of their patent application. The amended Rules also set out the criteria to qualify as start-up. The Rules do not mandate certification by any government agency to qualify as start-up. However, the patent office has set-out an additional requirement, although questionable, for Indian entities to qualify as start-up. The additional requirement is not applicable to Non-Indian entities, and the patent office at present has not set out clear guidelines on how it would deal with Non-Indian entities claiming start-up status. Hence, Non-Indian entities may continue to meet the criteria as defined by the Rules to claim start-up status.

The patent office requires an Indian entity claiming start-up status to obtain a certificate from Department of Industrial Policy & Promotion (DIPP). The certificate may be obtained after the patent application has been filed.

The procedure below is only for applicants who have already filed a patent application and the same is published.

Select “Patent filed and published in the Journal by the India Patent Office in areas affiliated with the nature of business being promoted”

Against “Supporting document based on the nature of recommendation selected above”, upload journal extract of publication of your patent application

Upload incorporation/registration certificate

Against “Brief note on innovativeness of products /services offered by the entity”, upload a document in PDF format that provides details relating to the nature of business of your company and why products /services offered by your company is innovative

With respect to tax benefits, note that, if you opt for tax benefits, your application will go to the Inter–Ministerial Board for evaluation, which may take time. If your aim is only to obtain benefits related to IPR, you can refrain from choosing the tax benefits option

Submit the application upon self-certification

We hope you find this information useful to avail benefits offered in the Indian patent system to start-ups from across the world.

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The Indian Patent Office has been vehemently using Section 3(d) of the Indian Patent Act to prevent innovator companies from evergreening patents. This section of the Act has been a matter of debate and deliberation over the years. While several multinational innovation companies have not left any stone unturned to show this section in bad light, social welfare groups swear by it.

Till recently, it was only by way of experience and surrounding speculation, it was considered that Section 3(d) is one of the most formidable hurdles for pharmaceutical patent applications in India. However, the official number of pharmaceutical patent applications that were rejected using Section 3(d) is now out.

The Minister of Commerce and Industry under which the Indian Patent Office functions has officially presented these numbers. As per the official statement, in the past three years, 955 patent applications in the field of pharmaceutical have been rejected. Out of the 955 patent applications, 618 patent applications have been rejected by citing Section 3(d) as one of the grounds for rejection.

Hence, based on the last 3 years’ statics, it can be concluded that, 65% of the pharmaceutical patent applications are rejected in India by citing Section 3(d) as one of the grounds. The statics clearly indicate that the patent office is extremely wary of applicants attempting to evergreen patents, and such attempts will most likely be confronted with Section 3(d).

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In the month of May 2016, several amendments were made to the Indian Patent Rules. The amendment introduced the option to expedited examination of patent applications, provided certain conditions are met. The amendment had also made it certain that the number of requests for expedited examination that will be allowed will be limited. Newly introduced rule, 24(C)(13), gave the Controller General of Patents, Designs and Trade Marks (CGPDTM) the authority to restrict the number of requests for expedited examination to be received every year.

Rule 24(C)(13):

Notwithstanding anything contained this rule, the Controller may limit the number of requests for expedited examination to be received during the year by way of a notice to be published in the official journal.

The CGPDTM, on June 14, 2016, has published a notification limiting the number of requests for expedited examination that will be accepted till December 31, 2016. As per the notification, the number of requests for expedited examination is restricted to 1000.

The Patents (Amendments) Rules, 2016 have come into force w.e.f. 16, May, 2016. In this regard the stakeholders and general public are hereby informed that in terms of provisions of sub-rule (13) of Rule 24C relating to expedited examination of applications, the number of requests for expedited examination to be received by the Patent Office on or before 31" December, 2016 has been limited to 1000 requests.

At present, the patent office website does not provide a dynamic utility to display the number of requests that are available in real time. Hence, at the time of filing requests using the online portal of the patent office, one will be able to know whether the number has been exhausted or not. Alternatively, we believe that the CGPDTM will again have a notification published once the number is exhausted.

At the time of writing this piece, request for expedited examination could still be filed. However, considering that 1000 is a small number relative to the number of patent applications filed in India, we anticipate the requests to be exhausted within the next couple of month, if not before that.

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The Indian Government has taken up various initiatives to reduce the time taken to examine patent applications. Two of the most noteworthy initiatives are appointment of a large number of patent examiners and introduction of an option to expedite examination of patent applications. The article discusses the option of expediting examination of patent applications.

Note that at the time of writing this article the amended rules, under which these benefits are being provided, was released one day before (May 16, 2016). Hence, there could be changes in the way these rules are interpreted going forward.

Qualifying for expedited examination

The following types of applicants will qualify to avail expedited examination.

The patent applicant is a start-up

The patent applicant was a start-up at the time of filing the patent application

The patent applicant has chosen India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in a corresponding PCT application.

Patent applicant was a start-up at the time of filing the patent application

A patent applicant might have applied for a patent before the option of expedited examination was introduced. Such applicants can also opt for expedited examination if they qualify to be recognised as start-up at the time the patent application was filed, and even if they later ceased to be qualified as a start-up for two reasons.

The first reason is that, after having filed the patent application (without claiming start-up status), at the time of requesting for expedited examination and it has been more than five years from the date of the applicant's (entity's) incorporation or registration.

The second reason is that, after having filed the patent application (without claiming start-up status), at the time of requesting for expedited examination the turnover of the applicant's (entity's) in one or more financial years has crossed INR twenty five crores (USD 3787878 at conversion rate of USD 1 = INR 66).

Patent applicant has chosen India as ISA or as IPEA

Patent applicants, other than those who qualify as start-up can also opt for expedited examination. Such applicants can include individuals and legal entities (ex: companies). In order to opt for expedited examination, such applicants should have filed a PCT application corresponding to the Indian application. Additionally, the applicants should have chosen India as ISA or IPEA. However, at present only Indian and Iranian applicants can choose India. Hence, Non-Indian and Non-Iranian patent applicants, who do not qualify as start-ups may not be able to opt for expedited examination.

Fees for expedited examinationThe fees charged for expedited examination is more than the fees charged for ordinary examination. Further, expedited examination request will be entertained only if the patent application is published. Hence, request for expedited examination may be filed after the patent application is published as a consequence of an early publication request or ordinary publication (publication after 18 months from priority date). Alternatively, the applicant can file an early publication request with the request for expedited examination. The fee structure for early publication, ordinary examination and expedited examination is provided below.

A limited number of requests for expedited examination requests may be entertained every year. Once the limit for the year has reached, communication to that effect will be made via the official journal of the Indian Patent Office. Hence, if the limit is reached, and the applicant qualifies to opt for expedited examination, then the applicant can file an ordinary examination request for the time being. Subsequently, when the patent office starts to accept requests for expedited examination in the following year, the applicant can convert the ordinary examination request to expedited examination request. In another scenario, if a qualifying applicant has already requested for ordinary examination even before expedited examination option was made available, such request can also be converted into expedited examination request. The fee structure for converting ordinary examination request to expedited examination request is provided below.

Expedited examination procedure

The primary advantage of expedited examination is that, the applications for which expedited examination is requested will be allotted to a queue, which is different from the ordinary examination queue, which already has lakhs of applications awaiting examination. Hence, the applications for which expedited examination is requested will be allotted to an examiner for examination substantially sooner than the applications that have been queued for ordinary examination. Once the application queued for expedited examination is allotted to an examiner, the procedure to be followed is time bound, and the same is illustrated in the flow chart below.

Note that opportunity of hearing with the patent examiner is available, just like ordinary examination, although not illustrated in the flow chart.

We hope this article helps patent applicants gain better understanding of the various initiatives of the Indian Patent office to expedite examination of patent applications and thereby benefit by availing them.

The Indian Government has announced various initiatives to promote start-ups. One such initiative brings various benefits to start-ups in their patenting initiatives. The benefits primarily correspond to discounts in government fees and expediting of patent examination. The government fees charged for start-ups will be the same as that charged for natural persons (individuals). In this article, we discuss the criteria to be met by an entity, regardless of whether the entity is Indian or not, to qualify as a start-up.

Note that at the time of writing this article the amended rules, under which these benefits are being provided, was released one day before (May 16, 2016). Hence, there could be changes in the way these rules are interpreted going forward.

Criteria to qualify as start-up

Most of the criteria are objective, with one criterion being subjective in nature. To begin with the objective criteria are listed as questions, and if the answer to each of the below listed questions is in the affirmative (yes), then the entity qualifies as a start-up.

Is the applicant for a patent a Private Limited company as defined in the Companies Act, 2013 or a registered partnership firm registered under section 59 of the Partnership Act, 1932 or a limited liability partnership under the Limited Liability Partnership Act, 2002?

Explanation: At present, it appears that Non-Indian partnership and limited liability partnership firms may not qualify as start-ups, since registration in India of such firms appear to be mandatory to claim benefits. However, a Non-Indian entity as long as it meets the definition of a “Private Limited Company” as defined in the Companies Act, 2013, can qualify as start-up. The definition is provided below.

“private company” means a company having a minimum paid-up share capital of one lakh rupees (USD 1515 at conversion rate of USD 1 = INR 66) or such higher paid-up share capital as may be prescribed, and which by its articles,—

restricts the right to transfer its shares;

except in case of One Person Company, limits the number of its members to two hundred:

Provided that where two or more persons hold one or more shares in a company jointly, they shall, for the purposes of this clause, be treated as a single member:

Provided further that—

(A) persons who are in the employment of the company; and

(B) persons who, having been formerly in the employment of the company, were members of the company while in that employment and have continued to be members after the employment ceased, shall not be included in the number of members; and

prohibits any invitation to the public to subscribe for any securities of

the company;

Has the entity been registered or incorporated within the last five years?

Has the turnover of the entity in each of the financial year in the last five years been less than INR Twenty five crores (USD 3787878 at conversion rate of USD 1 = INR 66)?

Has the entity been formed without splitting up or reconstructing a business, which was already in existence?

The entity has to provide evidence in support of the above listed criteria to be recognized as start-up. The evidence for an Indian entity can include registration or incorporation certificate, and Balance sheet/Income tax acknowledgment for the corresponding years. Whether a declaration by a Chartered accountant regarding the income of the company be accepted is yet be determined. A foreign entity may provide equivalent documents as evidence.

Further, with regards to the subjective criterion, an entity to qualify as start-up should be working towards innovation, development, deployment or commercialisation of new products, processes or services driven by technology or intellectual property. The criterion is considered to be met if the entity aims to develop and commercialise a new product or service or process, or a significantly improved existing product or service or process that will create or add value for customers or workflow. The entity may provide evidence supporting its claim to have met this criterion by providing a declaration mentioning that based on the patent application that is being currently filed they are working towards developing and commercializing a new product or service or process, or a significantly improved existing product or service or process that will create or add value for customers or workflow.

We hope this article helps patent applicants decide which type of entity they fall under. You may also read our article to know about how to claim small entity status.